Team Contact:Patent Litigation|Legal Service:David Berry,\u00a0John Halan|Time :2016-07-11|87\u00a0Views|Share:<\/p>\n
\u00a0 \u00a0 \u00a0 \u00a0 At the end of June, the U.S. Supreme Court\u2019s October 2015 term came to a close. The Court issued written decisions in three intellectual property cases during that term, the same number of cases as during the previous term, but fewer than in some recent years. Each case, however, will have a significant impact on future intellectual property proceedings. In addition, the Court already has granted certiorari in four cases for next term, and may add more IP cases to its docket in the Fall.<\/p>\n
October 2015 Term
\nThe Court decided four cases appealed from the U.S. Court of Appeals for the Federal Circuit during the 2015-2016 term (three with written opinions, one disposed by order). The Court affirmed the Federal Circuit in 25 percent of those cases (50 percent in patent cases), compared with a 33 percent affirmance rate in the October 2014 term and 17 percent in the October 2013 term. Since October 2012, the Supreme Court has decided 18 appeals from the Federal Circuit, and affirmed in five cases (28 percent).<\/p>\n
Three IP cases during the term resulted in written decisions:
\nCuozzo Speed Technologies, LLC v. Lee, No. 15-446 (June 26, 2016)
\nThe Court affirmed the Federal Circuit, holding that the USPTO acted within its authority in promulgating rules requiring the Patent Trial and Appeal Board to construe patent claims in Inter Partes Review proceedings under the more conservative \u201cbroadest reasonable interpretation\u201d (or \u201cBRI\u201d) standard. The Court also held that, with the exception of constitutional and other extraordinary challenges, the PTAB\u2019s decision to institute review in an IPR proceeding is not appealable.<\/p>\n
The eight justices participating in the case were unanimous that the USPTO\u2019s rules applying the BRI claim construction standard were reasonable and within the rulemaking authority delegated to the USPTO in the America Invents Act. See 35 U.S.C. \u00a7 316(a)(4). The Court stressed that PTAB trials are administrative proceedings that review the prior examination of an issued patent, akin to a reexamination. As a result, the Court rejected arguments that the proceedings were \u201cquasi-judicial\u201d requiring the PTAB to apply the claim construction standard used in federal court litigation.<\/p>\n
The Court noted that the use of BRI in PTAB trials may result in some inconsistency with parallel district court actions, but that possibility \u201chas long been present in our patent system\u201d based on the dual roles of the USPTO and the courts.<\/p>\n
On the appealability of the PTAB\u2019s decision to institute review, a majority of the Court ruled that the AIA expressly provided that the decision is not appealable. See 35 U.S.C. \u00a7 314(d). It noted that despite \u00a7 314(d), however, an institution decision could be appealed to lodge a constitutional challenge or in other extraordinary situations, such as the USPTO acting outside its statutory limits.
\nHalo Electronics, Inc. v. Pulse Electronics, Inc., No. 14-1513 (June 13, 2016) (decided with Stryker Corp. v. Zimmer, Inc., No. 14\u20131520).<\/p>\n
The Court rejected the prevailing Seagate test for finding willful infringement in patent cases, a finding that may increase the prospect of enhanced damages, up to treble actual damages, under 35 U.S.C. \u00a7284. See In re Seagate Technology, LLC, 497 F. 3d 1360 (Fed. Cir. 2007) (en banc). Under Seagate, a patent owner was required to prove by clear and convincing evidence both (1) that the defendant \u201cacted despite an objectively high likelihood that its actions constituted infringement of a valid patent,\u201d without taking into consideration the defendant\u2019s actual state of mind; and (2) that the defendant either knew of the high likelihood of infringement or it was so obvious that the defendant should have known the risk. The Court ruled that the Seagate test was \u201cunduly rigid\u201d and effectively \u201cinsulat[ed] some of the worst patent infringers from any liability for enhanced damages.\u201d In its place, the Court left the questions of willfulness and enhancement of damages largely to the discretion of the district court, but limited them to \u201cegregious\u201d cases.<\/p>\n
The Court based its ruling on Section 284, which states only that a court \u201cmay\u201d award enhanced damages, using a word that the Court noted \u201cclearly connotes discretion.\u201d The statute does not support the complex Seagate test applied by the Federal Circuit.<\/p>\n
The Court noted that although enhanced damage awards are discretionary, they must be consistent with a pattern laid out in over 180 years of case law under the Patent Act and earlier statutes. Based on that precedent, enhanced damages are \u201cdesigned as a \u2018punitive\u2019 or \u2018vindictive\u2019 sanction for egregious infringement behavior.\u201d The Court cautioned that such awards \u201care generally reserved for egregious cases of culpable behavior.\u201d
\nKirtsaeng v. Wiley & Sons, Inc., No. 15-275 (June 16, 2016)<\/p>\n
In this appeal from the Second Circuit, the Court held that when considering whether to award attorneys\u2019 fees to a prevailing party under the Copyright Act, a court should give substantial weight to the \u201cobjective reasonableness\u201d of the losing party\u2019s position, but also should consider all other circumstances relevant to granting a fee award.<\/p>\n
The Court granted certiorari to resolve the question whether a court should give substantial weight to the \u201cobjective reasonableness\u201d of the losing party\u2019s position in awarding attorney\u2019s fees in copyright cases. The Court unanimously held that objective reasonableness must be considered, but held that a court also should give \u201cdue consideration to all other circumstances relevant to granting fees\u201d and \u201cretain[s] discretion even when losing party advanced a reasonable claim or defense.\u201d The Court reasoned that the results of such an approach \u201cenhance the probability that both creators and users. . . will enjoy the substantive rights the [Copyright] statute provides.\u201d The Court reiterated that a court \u201cmust also give due consideration to all other circumstances relevant to granting fees; and it retains discretion, in light of those factors, to make an award even when the losing party advanced a reasonable claim or defense.\u201d<\/p>\n
October 2016 Term
\nThe Court already has granted certiorari in four IP-related cases for the next term, beginning in October 2016.
\nSamsung Electronics Co. v. Apple, Inc., No. 15-777.
\nIn this case, arising from the \u201cSmartphone Wars\u201d between Samsung and Apple relating to design patents covering Apple\u2019s iPhone and other mobile devices, the Court will consider the role of apportionment in measuring damages for design patent infringement. The question presented is: \u201cWhere a design patent is applied to only a component of a product, should an award of infringer\u2019s profits be limited to those profits attributable to the component?\u201d<\/p>\n
SCA Hygiene Products Aktiebolag v. First Quality Baby Products, LLC, No. 15-927
\nThis appeal is related to the Court\u2019s decision in Petrella v. Metro-Goldwyn-Mayer, 134 S. Ct. 1962 (2014), which held that laches is not available as a defense in copyright infringement actions. The Petrella court left undecided whether the same reasoning applies in patent cases. The question presented is: \u201cWhether and to what extent the defense of laches may bar a claim for patent infringement brought within the Patent Act\u2019s six-year statutory limitations period, 35 U.S.C. \u00a7 286.\u201d<\/p>\n
Star Athletica, LLC v. Varsity Brands, Inc., No. 15-866
\nIn this case from the U.S. Court of Appeals for the Sixth Circuit, the Court will consider whether chevrons, color patterns, and other design elements applied to cheerleading uniforms are protected by copyright, or merely functional. The question presented is \u201cWhat is the appropriate test to determine when a feature of a useful article is protectable under \u00a7 101 of the Copyright Act?\u201d<\/p>\n
Life Technologies Corp. v. Promega Corp., No. 14-1538
\nIn this case, the Court will consider the extraterritorial effect of the export of a component that is part of a patented invention under 35 U.S.C. \u00a7 271(f)(1). The question presented is: \u201cWhether the Federal Circuit erred in holding that supplying a single, commodity component of a multi-component invention from the United States is an infringing act under 35 U.S.C. \u00a7 271(f)(1), exposing the manufacturer to liability for all worldwide sales.\u201d<\/p>\n","protected":false},"excerpt":{"rendered":"
Team Contact:Patent Litigation|Legal Service:David Berr …<\/p>\n